While it is estimated that counterfeiting costs the global economy more than $250 billion per year, the damage counterfeiters do to brands by offering faulty and sometimes dangerous knock-off products is immeasurable.
Grant is an experienced trial lawyer who specializes in patent, licensing and trade secret litigation. He uses that experience to advise clients on ways to maximize the value of their intellectual property assets and defend from attacks by other companies.
Grant’s practice is truly national. In addition to Minnesota, he litigates in patent litigation hotbeds like California, Delaware and Texas. And he regularly appears in cases before the Federal Circuit Court of Appeals. Grant co-chairs Fredrikson’s Intellectual Property Litigation Group.
Grant also chairs the firm’s Anti-Counterfeiting Practice Group. One unfortunate byproduct of the growth of online marketplaces is that product counterfeiting and intellectual property piracy have exploded in recent years. Knockoff products can quickly erode prices and damage a legitimate seller’s reputation, particularly if the counterfeit products prove to be unsafe. Grant helps his clients use their intellectual property assets to remove knockoffs from the market.
- Paisley Park Enterprises, Inc. and Comerica Bank & Trust v. Ziani, et al. – District of Minnesota
- Paisley Park Enterprises, Inc. and Comerica Bank & Trust v. Boxill – AAA Arbitration
- Paisley Park Enterprises, Inc. and Comerica Bank & Trust v. Boxill, et al. – District of Minnesota
- QFO Labs, Inc. v. Target Corporation – District of Minnesota
- QFO Labs, Inc. v. Amazon.com, Inc. – District of Minnesota
- QFO Labs, Inc. v. Best Buy Stores, L.P., et al. – District of Minnesota
- Core Distribution v. John Does 1-14 (Yaheetech) – District of Minnesota
- Holmberg v. USA and L-3 Communications – Court of Federal Claims
- MasterMine Software, Inc. v. Microsoft Corp. – District of Minnesota and Court of Appeals for the Federal Circuit
- Petzila, Inc. v. Anser Innovation LLC – Northern District of California and Court of Appeals for the Federal Circuit
- IOENGINE, LLC v. Imation Corp. – District of Delaware
- Core Distribution, Inc. v. Xtreme Power (USA), Inc. – District of Minnesota
- Medtronic Navigation, Inc. v. St. Louis University – District of Colorado
- Ergotron, Inc. v. Rubbermaid Commercial Products, LLC – District of Minnesota
- Rubbermaid, Inc. v. Ergotron, Inc. – Western District of North Carolina
- Silver Screen Tele-Reality, Inc. v. Liquidus Marketing, Inc. and Digital Motorworks, Inc. – Northern District of Texas
- Medtronic Xomed, Inc. and Vision-Sciences, Inc. v. Q Park Medical Ltd. and Invotec International, Inc. – Middle District of Florida
- Geospan Corporation v. Pictometry International Corporation – District of Minnesota
- Uniloc USA, Inc. v. MakeMusic, Inc., et al. – Eastern District of Texas
- Medtronic, Inc., et al. v. Brasseler USA, Inc. – District of Minnesota
Intellectual Property Experience
- Grant is currently representing three of the nation’s largest retailers in patent suits in the District of Minnesota.
- In a patent infringement case against the US Army, Grant defeated the Government’s attempts to narrow limitations through claim construction and thereby avoid infringement. The claim construction order adopted each of Grant’s asserted positions. Grant then defeated the Government’s attempt to obtain a summary judgment of non-infringement or invalidity, sending the case to trial.
- Grant successfully moved the Northern District of California to dismiss a competitor’s declaratory judgment complaint asserting non-infringement and invalidity because the district court lacked personal jurisdiction over Grant’s client. Grant then convinced the Federal Circuit to affirm that decision on appeal. The appellate court upheld Grant’s victory on the briefs without needing an oral argument.
- Grant and his colleagues defeated a competitor’s motion for preliminary injunction seeking to shut down his client’s aerial photogrammetry business due to alleged patent infringement. Grant then convinced the District of Minnesota to dismiss the infringement claim on summary judgment. As the Court noted, there was not “even a wisp” of evidence that Grant’s client infringed the patent.
- Grant and his colleagues represented a local software company in a patent infringement suit against Microsoft in the District of Minnesota and Court of Appeals for the Federal Circuit.
- Grant and his team brought a lawsuit in the District of Minnesota against a foreign competitor and its United States distributor for infringing a patent covering agricultural heating devices. After defeating his opponents’ attempt to relocate the case to North Carolina, Grant’s team convinced the competitor and distributor to redesign the accused product to end the litigation.
- Grant and his colleagues brought a lawsuit in the District of Minnesota against a competitor for infringing a patent covering coating compositions for eyeglasses. After Grant’s team moved for a preliminary injunction, his opponent agreed to stop selling the product and stipulated to a permanent injunction.
- Grant and his team brought a lawsuit in the Middle District of Florida against a competitor for infringing a medical device patent covering disposable sheaths for flexible endoscopes. Grant’s team was able to convince the opponent to stop selling the accused product at an early stage, before the claim construction hearing.
- Grant was a member of a successful trial team in a patent infringement case in the Eastern District of Texas. The client, a leading manufacturer of computer display stands, and its downstream customers faced an opponent who was seeking nearly $200 million in damages and attorney’s fees. Grant’s trial team convinced the jury to reject that exorbitant amount.
- Grant and his team defended co-owners of a patent relating to reactors for ethanol plants against a declaratory judgment action brought by a competitor in the District of Idaho. The competitor sought to invalidate the clients’ patent. Grant and his team successfully moved the Court to dismiss the lawsuit for lack of personal jurisdiction, and the competitor chose to give up rather than re-file in Minnesota.
Anti-Counterfeiting and Anti-Piracy Experience
- Grant and his team recently obtained an award of nearly $4,000,000 in damages and attorney’s fees in an arbitration hearing involving the unauthorized use of music owned by the Estate of Prince Rogers Nelson.
- Grant is part of a team representing the Prince Estate in litigation concerning the late superstar’s intellectual property assets. In one of his cases, Grant brought suit against a bootleg record label asserting claims for trademark infringement, trademark counterfeiting, copyright infringement, bootlegging and violating Prince’s right of publicity.
- Grant and his team have successfully removed hundreds of infringing products from e-commerce platforms for a manufacturing client using a combination of informal enforcement mechanisms and patent infringement suits.
- Grant led a team that obtained a default judgment in the District of Minnesota against a defendant who was selling counterfeit ladders on Amazon. The district court found willful patent infringement, entered a permanent injunction against the seller, awarded treble damages and attorney’s fees, and held the defendant in contempt when it violated the injunction. Grant’s team also defeated the seller’s attempt to vacate the judgment.
- Grant brought suit against a large group of counterfeiters in the District of Minnesota who were selling on Amazon. He obtained a consent judgment against the largest violator and negotiated settlements with the remaining defendants. As a result of the lawsuit, the infringing products were removed from Amazon.
- Grant is leading a team that is actively representing a start-up storage and organization products company in asserting its intellectual property rights against counterfeiters selling knockoff products on Amazon, eBay, Alibaba, and other e-commerce sites. His team has successfully removed over a dozen sellers from the market without resorting to litigation.
Articles & Presentations
September 1, 2017
In May 2017, the United States Supreme Court decided TC Heartland LLC v. Kraft Foods and limited venue in patent cases to where a corporate defendant is incorporated or has a regular and established place of business.
December 23, 2016
Hydreon Corporation sells a product called FakeTV®, which deters burglars by emitting and projecting light patterns to simulate real television broadcasts. The light patterns make it appear that someone is home watching television when the house is actually empty. In recent years, counterfeit versions of the FakeTV® device have sprung up on Amazon.com and eBay.com. This has become an all-too-common occurrence for U.S. companies.
July 7, 2016
What is old is new again when it comes to willful infringement.
December 2, 2015
Pleading patent infringement got a little bit trickier on December 1, 2015.
July 21, 2015
In 1964, the Supreme Court decided Brulotte v. Thys and held that a patent owner cannot charge royalties for the use of a patented invention after the patent’s term has expired. While the Brulotte rule is simple, it has faced plenty of criticism over the years. Lower courts and academics alike have challenged the economic logic underlying the rule and criticized the decision as counterintuitive.
July 7, 2015
Super Lawyers Magazine recognized 36 Fredrikson & Byron attorneys as 2015 Minnesota Super Lawyers and 15 attorneys as Minnesota Rising Stars.
May 19, 2015
Many companies accused of infringement have turned to Inter Partes Review (IPR) as an alternate route for challenging the validity of patent claims. But what happens if an accused infringer moves to stay litigation in light of a pending IPR petition? In the District of Minnesota, that motion will likely be considered premature.
Is It Time to Reevaluate Your Patent Licenses? The Supreme Court Strengthens the Hand of Licensees in MedImmune and Medtronic
March 5, 2014
If you have a license to a patent and have lingering doubts about whether the patent actually covers your product, two recent Supreme Court decisions should be of interest to you.
Grant Fairbairn Named Chair of the MN Intellectual Property Law Association’s Patent Litigation – ADR – CAFC Committee
February 19, 2014
Fredrikson & Byron attorney Grant D. Fairbairn was recently appointed to Chair of the Minnesota Intellectual Property Law Association’s Patent Litigation – ADR – CAFC Committee.
PUBLICATIONS & PRESENTATIONS
- Presenter, “The Year in Review for Minnesota IP Litigation,” MIPLA Stampede, May 2018
- Co-presenter, “Fake vs. Real: Anti-Counterfeiting Strategies to Protect Your Brand,” Fredrikson & Byron Anti-Counterfeiting Seminar, November 30, 2017
- “Avoid the Pitfalls Encountered by Makin Bacon,” Star Tribune, April 17, 2017
- Speaker, “Reading the Tea Leaves – The Impact of Early PTAB Decisions on Litigation and Prosecution Strategy,” MIPLA Stampede, May 2014
Honors & Education
- Georgetown University Law Center, J.D., 2003, cum laude
- University of Wisconsin, B.A., 2000
- Minnesota, 2003
- U.S. District Court for the District of Minnesota, 2003
- U.S. Court of Appeals, Eighth Circuit, 2004
- U.S. Court of Appeals, Federal Circuit, 2009
- United States Supreme Court, 2012
- Minnesota Super Lawyers, Rising Star – Intellectual Property Litigation, 2014-2017
- Federal Bar Association
- Federal Circuit Bar Association
- Minnesota State Bar Association
- Minnesota Intellectual Property Law Association
- Former Chair, Minnesota Intellectual Property Law Association, Patent Litigation – ADR – CAFC Committee
- Volunteer Mediator, Hennepin County District Court Pilot ADR Project
- Volunteer Lawyers Network, Volunteer at Consumer Protection Workshop
- MSBA Professionalism Committee, Former Committee Member
- Minnesota Sinfonia, Former Board Member and Chairman of the Board